DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/13/2026 has been entered.
All previous rejection not reiterated in this office action are withdrawn.
Claims 1-6, 9-20 are pending. Claims 18-20 are withdrawn. Claims 1-6 and 9-17 are currently under examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The recitation of “AAV acoustic targeting peptide is inserted between two adjacent amino acids in AA586-592 of the AAV capsid protein” renders the claim indefinite because the position of AA586-592 is not referring to any specific amino acid sequence. As such, the insertion site in the capsid protein cannot be determined because recombinant capsid protein encompasses polypeptides that have different structure and/size.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 13 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by the sequence having accession number A0A1U7IPF8, A0A5E3ZX89, A0A418XZZ3, A0A0Q8SV90 or A0A1G5ZMQ4. This rejection is rewritten to address the amendment.
Claim 13 is directed to a nucleic acid, comprising a sequence encoding the AAV targeting peptide of claim 1. Even though the peptides of claim 1 (SEQ ID NO: 1-5) is part of a capsid protein of an AAV, the nucleic acid encoding said peptide would still comprise the same sequence.
Regarding claim 13, since the amino acid sequence of the protein is known in prior art, nucleic acid encoding said amino acid sequence may be deduced from said amino acid sequence(s), A0A1U7IPF8, A0A5E3ZX89, A0A418XZZ3, A0A0Q8SV90 and A0A1G5ZMQ4.
Claim Objections
Claim 11 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In the present situation, claim 1 recites the AAV acoustic targeting peptide is part of a capsid protein of an AAV, wherein claim 11 recites a capsid protein comprising the AAV acoustic protein of claim 1. As such, both claims cover the same thing, a capsid protein comprising AAV acoustic targeting peptide, despite a slight difference in wording.
Claims 12 and 16 is objected to as being dependent upon a objected/rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Allowable Subject Matter
Claims 1-6, 9, 10, 14 and 17 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CELINE X QIAN whose telephone number is (571)272-0777. The examiner can normally be reached M-F (8-4:00).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Dunston can be reached at 571-272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CELINE X QIAN/Primary Examiner, Art Unit 1637
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